Wednesday, April 20, 2005

Control Protect and Leverage?

Why is this the name of our Blog? Simply because these are the steps that every individual or company should follow concerning their Intellectual Property (IP) no matter what type of IP they own. In fact, there really is no point to having IP if all these steps are not followed.

My next three Blog entries will discuss each step in greater detail with today being about "CONTROL".


It behooves you to have an IP agreement in place with all your employees or at the very least those involved in marketing and product development. The agreement should in no uncertain terms make it clear that the company owns all intellectual property developed by the employee on company time, using company assists, and/or that relating to the company's area of business. Often, the IP agreement is made part of the employment contract.

Further, companies should have a written and enforced trade secrets policy. Trade secrets are information developed by a business that is not readily or easily available to those outside the business. Trade secrets can include things such as customer lists and other proprietary information that if obtained by a competitor would potentially hurt your competitive position in the marketplace. If an employee leaves your company for a competitor and takes trade secret information with him, you can sue the former employee and competitor to return the information and enjoin them from making use of it . However, in order to be successful the trade secret information must be treated and handled properly by the company and its employees. For example, only those employees with a need to know should have access to any particular piece of sensitive information. Further, any information that is intended as a trade secret should be appropriately marked. By having a written policy and procedures to see that the policy is enforced, a company's chances of prevailing in a trade secrets dispute are greatly enhanced.


Much too often we have clients come into our office that want to patent their invention, but they are no longer able to legally do so. I have had clients come close to begging for me to draft and file a patent application for them. The primary reason that they cannot receive a patent is that they have either been using the invention in public for more than a year in an uncontrolled manner or they have offered the invention to sale to someone more than a year prior to coming to me. Incidently, when it comes to most foreign patent rights, you don't even have one year. Rather, the bar to filing an application occurs immediantly once you disclose an invention to the public!

Avoiding uncontrolled public use or disclosure is a relatively simple: have whoever you are disclosing the invention to sign an Non-Disclosure Agreement (NDA). A sample NDA is available on our website.

Does this mean you should have close friends, children and spouses sign an NDA? Well, I am unaware of any specific instances where an inventor has lost his/her rights by disclosing the invention to people close to them, you always run the risk that these same people may disclose the idea to others and at that point you will have lost control of your invention and the one year clock will being to run. Generally, I don't see such disclosures to close friends and family as a problem but it never hurts and can only help if they sign an NDA.

An NDA will not prevent the one year clock from beginning to run if you offer the invention or an embodiment of the invention for sale even if the person or company your offering the invention to has signed an NDA. So be very careful about offering to sell your invention and if you do make such an offer, note the date and make sure to contact a patent attorney no later than a couple of months before the first anniversary of the date.

Concerning all issues relating to the CONTROL of your intellectual property, it is always wise to contact a qualified attorney (remember only patent attorneys are qualified to render legal advice about the procurement of a patent). Without a doubt, the most cost effective us of legal counsel is before an issue or problem arises. When it comes to IP, the old cliche, "an ounce of prevention is worth a pound of cure" is definitely true.

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Monday, April 18, 2005

Consumer Commentary Website Determined Not to Infringe Trademark

9th Circuit Supports Non Commercial Use of Trademark in Domain Name – good news for “consumer commentary” websites

In a decision issued on April 4, 2005, the 9th Circuit Court of Appeals upheld a lower decision that the noncommercial use of a trademark in a domain name of a website which contained consumer commentary about the products and services represented by the trademark is not considered infringement under the Lanham Act (the federal trademark statute). In Bosley Medical Institute, Inc v. Kremer, the website in question ( did not earn any revenue, sell any goods or services on the website or have any links to any of Bosley’s competitors. The court relied on the US Supreme Court’s decision in Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924) which states that “trademark infringement law prevents only unauthorized uses of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential consumers." Since there wasn’t any commercial activity taking place on the website or on other websites that were linked to the website in question, the use of the mark in the domain name did not constitute trademark infringement. However, Bosley could still have a claim under the Anticybersquatting Consumer Protection Act – if they can show that Kramer had a“bad faith intent to profit” from the use of the trademark. So we will have to keep track of this one and see how it goes at the trial court level. For right now it seems to be a victory for proponents of free speech and consumer commentary websites.

Wednesday, April 13, 2005

Our New Blog

Why a Blog? That is a question I am asking myself as I type away. Ultimately, Leyendecker Lemire and Daley, LLC is about providing information to our clients and prospective clients. And a Blog is a way to do this.

Hopefully, prospective clients will get a sense of who we are from this Blog. Lets face it, legal services can be expensive and you deserve to have attorneys on your side that you are comfortable with. I have no doubt many of you will appreciate and welcome our open, approachable and up front manner while others of you may prefer more traditional button-up attorneys. We just want you to make the choice that is best for you.

What can you expect from this Blog? Well as the Categories indicate you can expect our pontifications on legal matters relating to intellectual property and business. Perhaps, on occasion one of us might philosophize about something else altogether. And on yet other occasions one or more of us may provide a little insight in to our lives outside of the office. All I can say is tune in and see.

Now, if are Blog is a bit boggy in the beginning, please forgive us. After all, we are attorneys, not web masters. Of course, if you have any questions don’t hesitate to contact us.

Kurt Leyendecker, Esq